Legal Updates

Changing attitudes to letters of consent - what brand owners need to know

Letters of consent have been problematic in China, where brand owners often experience difficulty in obtaining such letters from local companies and having them accepted by the courts. However, there are encouraging signs that the situation is changing.

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Important changes to trademark-related procedures before NOIP; applicants set to benefit

A circular of the Ministry of Science and Technology has introduced important changes to trademark-related procedures before the National Office of Industrial Property. This update highlights some of the most significant changes.

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General Court confirms likelihood of confusion between 'jumping cats' marks

In Arctic Cat v EUIPO, the General Court has upheld a decision of the Fifth Board of Appeal of the EUIPO finding that there was a likelihood of confusion between two figurative trademarks representing a jumping wild cat for goods in Class 25.

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'.ng' registrations on the up, but government agency urges cyber patriotism

The National Information Technology Development Agency has called upon government and private sector organisations to use Nigerian data centres, arguing that it would facilitate "reductions in cost and capital flight".

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JOY fails to prevent registration of HISPANITAS JOY IS A CHOICE despite enhanced distinctive character

In Jean Patou Worldwide v EUIPO, the General Court has confirmed that there was no likelihood of confusion between the figurative mark HISPANITAS JOY IS A CHOICE and the earlier mark JOY for “perfumes” in Class 3.

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Why it is critical to provide sufficient evidence under ADR procedures for '.fr' domain names

In a decision under the Syreli alternative dispute resolution procedure, a college from AFNIC has denied the transfer of a domain name consisting of the name of the complainant under ‘.fr’ due to lack of evidence.

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Slight change in defendant's registered mark found to infringe claimant's mark; court awards Rmb3 million in damages

A Chinese court has found that the registered trademark 了M, as used by its owner, did not constitute "standard use" of the registered trademark and infringed 3M Company’s registered trademark 3M.

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Signed, sealed and almost delivered - new trademark law is in sight

Canada is finally completing the last steps necessary for implementing its new trademark law, which will introduce significant changes.

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Supreme Court of Appeal's CLEARVU decision: a clearer view of disclaimers and admissions?

In Cochrane Steel v M-Systems, which concerned the trademark CLEARVU, the Supreme Court of Appeal has considered the effect of disclaimers and admissions in South African trademark law.

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ECJ: no time limit for production of evidence in invalidation proceedings based on absolute grounds

In EUIPO v European Food, the ECJ found that there are no time limits for the production of evidence in the context of an application for a declaration of invalidity based on absolute grounds.

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Federal Circuit bleeps Lanham Act ban on immoral or scandalous marks

In In re: Brunetti, the Federal Circuit has reversed the TTAB's finding that the mark FUCT as used in connection with various apparel items was unregistrable under Section 2(a) of the Lanham Act.

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New circular improves customs protection of IP rights; number of suspensions increases considerably

A new circular, published by the Ministry of Customs and Trade to remedy a gap in the system for the protection of IP rights by Customs, has allowed right holders to combat counterfeiting more effectively.

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General Court confirms rejection of FACK JU GÖHTE; rare application of Article 7(1)(f)

In Constantin Film Produktion GmbH v EUIPO, the General Court has upheld a decision of the EUIPO rejecting an application for the mark FACK JU GÖHTE for a wide range of goods and services under Article 7(1)(f) of Regulation 207/2009.

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UDRP panel finds RDNH; complainants should disclose all prior dealings with respondent

A UDRP panel has denied the transfer of ‘modz.com’ to the owner of the mark MODZ, and also made a finding of reverse domain name hijacking for failure to disclose prior communications with the respondent.

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Good news for parallel importers: mark owners cannot prohibit import of authentic goods

The Moscow Arbitration Court has held that right holders cannot prohibit the importation of authentic products, even if the goods are imported by unauthorised distributors.

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General Court follows holistic approach to evidence of use; dangers of Article 128(7) highlighted

In Deichmann v EUIPO, the General Court has confirmed that there had been genuine use of a figurative mark for sports shoes, even though the mark as used was not identical to the mark as registered.

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Why the authorities are taking a tougher stance on trademark infringement in the Chinese food industry

Recent criminal cases involving fake food labels have highlighted the tough stance taken by the authorities in counterfeit food cases.

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Additional requirements for legalisation raise concerns

Additional requirements imposed by the authorities in charge of legalisation have raised concerns.

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General Court's METAPORN decision: why adult entertainment and telecommunication services are similar

In Sun Media Ltd v EUIPO, the General Court has confirmed that there was a likelihood of confusion between the mark METAPORN and earlier META4 marks.

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Significant changes to trademark law and practice introduced

The government has issued a new executive order, effective as of January 12 2018, which contains amendments to the regulations on industrial property rights.

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General Court's SWISSGEAR decision: a useful reminder of the legal principles surrounding Articles 7(1)(b) and (c)

In Wenger SA v EUIPO, the General Court has upheld the decision of the EUIPO to invalidate the mark SWISSGEAR for a wide range of goods.

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Apex court: TDOs may declare that goods are imitations

The Federal Court has considered the meaning and significance of Section 9 of the new Trade Descriptions Act 2011.

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General Court confirms that DUAL EDGE is descriptive for Class 9 goods

In LG Electronics, Inc v EUIPO, the General Court has confirmed that DUAL EDGE is descriptive and lacks distinctive character for mobile phones and related goods.

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Use of emblem for GIs and traditional products now mandatory

Following the entry into force of a new regulation on January 10 2018, it is now mandatory to use an emblem on products protected by GIs and on traditional products.

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New York court issues decision in bottle dispute

In Can’t Live Without It LLC v ETS Express Inc, a federal court has granted a partial summary judgment in a trade dress infringement and unfair competition case involving an alleged knock-off bottle.

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CTMO to take measures to combat bad-faith applications

The China Trademark Office is planning to take several measures to curb the rising number of bad-faith registrations.

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Beijing IP Court decides first GUI infringement case

The Beijing IP Court has issued its decision in the first GUI infringement case in China, in a battle between two anti-virus software giants.

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TTAB grants motion for summary judgment as to fraud counterclaim

In Kastle Systems v Lee Strategy Group, the TTAB has granted the opponent’s motion for summary judgment, dismissing the applicant's fraud counterclaim.

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Polo/Lauren Company fails to invalidate 'polo player' mark

The Polo/Lauren Company has failed to invalidate the Royal County of Berkshire Polo Club's registration for a composite mark containing the word 'polo' and the device of a polo player.

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Starbucks successful in COFFEE ROCKS case

In Starbucks Corp v EUIPO, the General Court has found that the figurative mark COFFEE ROCKS for coffee services was confusingly similar to Starbucks’ well-known logo.

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Court of Appeals of The Hague: vodka marks must be handed back to Russian state enterprise

The Court of Appeals of The Hague has ruled in favour of Russian state enterprise FKP in the long-running dispute between FKP and Spirits International BV over the ownership of several vodka marks.

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Issue 71